Laurence R. Lipstone et al.

Patent Trials and Appeals Board

Aug 1, 2019

14307389 - (D) (P.T.A.B. Aug. 1, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/307,389 06/17/2014 Laurence R. Lipstone 0447-US-U42-I1 1753
21398 7590 08/01/2019
Level 3 Communications, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
EXAMINER
CELANI, NICHOLAS P
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
08/01/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent.docketing@level3.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LAURENCE R. LIPSTONE, WILLIAM CROWDER,
ANDREW SWART, CHRISTOPHER NEWTON, and
LEWIS ROBERT VARNEY
____________________

Appeal 2018-000043
Application 14/307,3891
Technology Center 2400
____________________

Before CARL W. WHITEHEAD JR., IRVIN E. BRANCH, and
MICHAEL M. BARRY, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–9, 11–23, and 25–33, which are all of the claims pending in the
application. A hearing was held on July 3, 2019. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Level 3
Communications, LLC. Br. 2.
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Technology
The application relates to monitoring configuration information in a
content delivery network. Spec. Abstract.
Related Matters
Appellants inform us as follows:
Appeals have been filed or are being filed in the
following Applications that share a priority Application
(Provisional Application 61/737,072, filed December 13, 2012)
with the present Application: 13/715,590; 13/715,747;
13/802,093; 13/802,143; 13/802,335; 14/088,356; 14/088,358;
14/088,367; 14/088,542; 14/307,380; and 14/578,402.
Br. 2.
Illustrative Claim
Claims 1–9, 11–23, and 25–33 are pending. Claims 1, 25, 32, and 33
are independent. Claim 1 is reproduced below for reference:
1. A computer-implemented method operable in a
content delivery network (CDN), the method operable on one or
more devices comprising hardware including memory and at
least one processor, the method comprising:
(A) at a content source external to the CDN, wherein the
CDN serves content from the content source via content delivery
(CD) services in the CDN, monitoring configuration information
associated with content to be delivered by the CDN on behalf of
the content source; and,
(B) in response to at least one change in the configuration
information being determined by the monitoring, the content
source providing to the CDN an indication of a change in the
configuration information; and
(C) in response to the content source providing the
indication in (B), the CDN (i) obtaining at least some of the
configuration information; and (ii) modifying configuration
information associated with content from the content source,
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wherein said modifying in (C)(ii) produces modified
configuration information; and
(D) in response to a client request for content associated
with said content source, serving said content in accordance with
said modified configuration information.

References and Rejections2
Claims 1–9, 11–23, and 25–33 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Br. 3–4.
Claims 1–9, 11–16, 18–23, and 25–33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wein (US 2007/0250560 A1; Oct. 25, 2007)
and Devanneaux (US 2007/0156845 A1; July 5, 2007). Final Act. 4–20.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wein, Devanneaux, and Berger (US 2002/0062325 A1; May 23, 2002).
Final Act. 20.
Claims 1–9, 11–16, 18–23, and 25–33 stand alternatively rejected
under 35 U.S.C. § 103(a) as unpatentable over Wein, Devanneaux, and
Evans (US 2003/0033283 A1; Feb. 13, 2003). Final Act. 21.

2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the above mentioned Appeal Brief filed June 30,
2017 (“Br.”), as well as the following documents for their respective details:
the Final Rejection mailed December 30, 2016 (“Final Act.”) and the
Examiner’s Answer mailed July 27, 2017 (“Ans.”).
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments. We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv). We adopt the Examiner’s findings
and conclusions as our own, to the extent consistent with our analysis herein.
We add the following primarily for emphasis.

The 35 U.S.C. § 101 rejection of claims 1–9, 11–23, and 25–33
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101, because the claims “are directed to the abstract idea of
obtaining and comparing intangible data” and that “[t]he claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because no claims perform any acts with
the data other than transfer either the data itself or an indication of the data
in a conventional manner.” Final Act. 3; see also Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 217 (2014) (Describing the two-step
framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.”).
After the docketing of this Appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See USPTO’s 2019
REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Memorandum”). Under Step 2A of the Guidance, the office
looks to whether the claim recites:
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(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a fundamental
economic practice, or mental processes); and
(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)).
See Memorandum, 84 Fed. Reg. at 53–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
look, under Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, conventional in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.
Appellants do not separately argue the claims. See Br. 9–15. We
select claim 1 as representative. We agree with the Examiner’s
determination that claim 1 is not patent eligible (see Final Act. 3–4; Ans. 4–
14); we add the following primarily for emphasis and clarification with
respect to the Guidance.

I. Step 2A, Prong One
Pursuant to the Guidance, we agree with the Examiner that claim 1
recites an abstract concept. See Final Act. 3. The claim recites monitoring
configuration information in a content delivery network (CDN), which is a
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mental process implemented in a computer. See Claim 1. That is, the claim
recites the abstract idea of obtaining and comparing intangible data.
Such determination accords with our review pursuant to the Guidance.
Claim 1 recites the following limitations:
(A) at a content source external to the CDN, wherein the CDN
serves content from the content source via content delivery (CD)
services in the CDN, monitoring configuration information
associated with content to be delivered by the CDN on behalf of
the content source; and,
(B) in response to at least one change in the configuration
information being determined by the monitoring, the content
source providing to the CDN an indication of a change in the
configuration information; and
(C) in response to the content source providing the indication in
(B), the CDN (i) obtaining at least some of the configuration
information; and (ii) modifying configuration information
associated with content from the content source, wherein said
modifying in (C)(ii) produces modified configuration
information; and
(D) in response to a client request for content associated with said
content source, serving said content in accordance with said
modified configuration information.
These are steps of “concepts performed in the human mind” such as “an
observation, evaluation, judgment, opinion” under the Guidance. See
Memorandum, 84 Fed. Reg. at 52. Accordingly, claim 1 recites the abstract
concept of “[m]ental processes.” Id.
Consequently, claim 1 “recites a judicial exception [and] . . . requires
further analysis in Prong Two” of the Guidance. Memorandum, 84 Fed.
Reg. at 54.

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II. Step 2A, Prong Two
Appellants argue claim 1 is not directed to an abstract idea, because
the “[t]he invention thus solves a problem that is unique to computer
networks (especially to content delivery networks)” and “[t]he claimed
invention is ‘operable in a content delivery network,’ and solves a technical
problem specifically arising in the realm of content delivery networks.” Br.
12.
We are not persuaded. Other than broadly reciting, at a high level of
generality, “the method operable on one or more devices comprising
hardware including memory and at least one processor,” claim 1 provides no
detailed limitations integrating the judicial exception into a practical
application. See Memorandum, 84 Fed. Reg. at 54 (“more than a drafting
effort designed to monopolize the judicial exception.”). The recited
limitations do not reflect an improvement in the functioning of a computer
or other technology or technical field. See Memorandum, 84 Fed. Reg. at
55; cf. Trading Techs. Int’l, Inc. v. IBG LLC, No. 2017-2257, 2019 WL
1716242, at *3 (Fed. Cir. Apr. 18, 2019) (“This invention makes the trader
faster and more efficient, not the computer. This is not a technical solution
to a technical problem.”). Further, the limitations regarding the location of
the monitoring are not additional elements of the claim; rather, these
limitations are part of the abstract idea of obtaining and comparing
intangible data. See Memorandum, 84 Fed. Reg. at 54–55 (“any additional
elements recited in the claim beyond the judicial exception[].”).
We agree with the Examiner that the additional elements, individually
and in combination, “represent basic network computer functionalities that
not only one of skill but even lay people would know to be conventional at
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the time of invention - data can be transmitted over a network, and saved
data files can be modified” and that these elements amount to “[p]erforming
an abstract idea in a conventional environment [and are] not sufficient to
make the claims more than the abstract idea.” Ans. 5–6. “The courts have
also identified examples in which a judicial exception has not been
integrated into a practical application . . . [such as when the] element merely
recites the words ‘apply it’ (or an equivalent) with the judicial exception, or
merely includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea.”
Memorandum, 84 Fed. Reg. at 55; see also Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[M]erely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea.”).
Accordingly, we determine claim 1 does not integrate the judicial exception
into a practical application. See Memorandum, 84 Fed. Reg. at 54. As the
“claim recites a judicial exception and fails to integrate the exception into a
practical application” (id. at 51), “the claim is directed to the recited judicial
exception” (id. at 54).

III. Step 2B
Appellants argue “[t]he claims, like those in [Enfish], are directed on
their face to an improvement to computer functionality itself, the claims here
‘are directed to a specific improvement to the way computers operate,’ in
particular in a computer network.” Br. 15.
We are not persuaded the Examiner’s rejection is in error, pursuant to
Step 2B of the Guidance. Other than the recited judicial exception, claim 1
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recites “the method operable on one or more devices comprising hardware
including memory and at least one processor.” These additional elements
are all recited at a high level of generality and are implemented by well-
understood, routine, and conventional components. See Answer 10–12;
Specification ¶¶ 111, 1385; see also Alice, 573 U.S. at 226 (“Nearly every
computer will include a ‘communications controller’ and ‘data storage unit’
capable of performing the basic calculation, storage, and transmission
functions required by the method claims”); OIP Techs. v. Amazon.com, 788
F.3d 1359, 1363 (Fed. Cir. 2015) (claims reciting, inter alia, sending
messages over a network, gathering statistics, using a computerized system
to automatically determine an estimated outcome, and presenting offers
found to merely recite “well-understood, routine conventional activit[ies]”).
We agree with the Examiner that the additional elements, individually and in
combination, do not provide for an inventive concept that is significantly
more than the recited judicial exception. See Final Act 3–4; Ans. 12–14;
Memorandum, 84 Fed. Reg. at 56.
Accordingly, we sustain the Examiner’s patent eligibility rejection of
claims 1–9, 11–23, and 25–33.

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The 35 U.S.C. § 103 rejections of claims 1–9, 11–16, 18–23, and 25–
33 over Wein and Devanneaux and over Wein, Devanneaux, and Evans
Appellants do not indicate to which rejection the arguments against
obviousness pertain. See Br. 16–28. We proceed as if Appellants’
arguments are applicable to either rejection.
Appellants argue error in the rejections of claim 1 because:
nowhere does Wein teach or in any way suggest, as claimed, “at
a content source external to the CDN, . . . monitoring
configuration information associated with content to be delivered
by the CDN on behalf of the content source; and, . . . in response
to at least one change in the configuration information being
determined by the monitoring, the content source providing to
the CDN an indication of a change in the configuration
information.”
Br. 18; see also id. at 16–19. Appellants also contend:
the Examiner acknowledges that Wein “does not . . . teach
modified configuration information” . . . [and] then states “[i]t
would have been obvious to an artisan of ordinary skill at the
time of Applicant’s invention to combine the method of Wein
with the default configurations in order to ease setup for content
providers who do not wish to micromanage their content
distribution.”
Id. at 19 (quoting Final Act. 5 and 6). Appellants argue the Examiner errs
because whether “‘[i]t would be obvious to use default configurations . . .’ is
not the correct legal standard for an obviousness rejection under 35 [U.S.C.
§ 103].” Id.
We are unpersuaded of error for the reasons stated by the Examiner in
response to Appellants’ arguments (Ans. 18–21), which Appellants do not
persuasively rebut.
In general, we are unpersuaded of error because Appellants
unpersuasively attack only the Wein reference. See, generally, Br. 16–28.
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But the Examiner’s rejections are based on the combined teachings of Wein
and Devanneaux or Wein, Devanneaux, and Evans. See Final Act. 4–21;
Ans. 14–21.
In particular, we agree with the Examiner’s broad but reasonable
construction of “in a content delivery network (CDN) . . . at a content source
external to the CDN . . . monitoring configuration information associated
with content to be delivered by the CDN on behalf of the content source.”
Ans. 18–19. The Examiner determines that this includes the CDN
monitoring the configuration information at the content source. Id.
Appellants do not persuasively rebut this construction. See Br. 16–19. Nor
do Appellants persuasively rebut the Examiner’s finding that Wein renders
the limitation obvious. Id.; Ans. 19 (“the fact that a customer can tag items
. . . or domains . . . which [are] remotely transmitted to the CDN, together
with the fact that a change in a file can be detected . . . , evidence[s] that it
would [have] be[en] obvious to have the CDN perform remote monitoring
and transmit the information back to the CDN” (citing Wein ¶¶ 23, 43–44,
84)).
Appellants also do not rebut the Examiner’s finding that Devanneaux
teaches modified configuration information. Ans. 19–20 (citing
Devanneaux ¶ 22).
Appellants argue claim 13 separately. See Br. 20–22. Claim 13
recites, “[t]he method of claim 10 wherein the CDN obtains at least some of
the configuration information from a source distinct from the content
source.” We note that claim 10 has been canceled. See Br. 31. We treat this
as a typographical error and proceed as if claim 13 depends from claim 1.
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Appellants argue claim 13 on the basis that “the Examiner has failed
to present any type of rationale.” Br. 22.
We are unpersuaded of error for the reasons stated by the Examiner
(Ans. 21–24), which Appellants do not persuasively rebut.
Appellants argue claims 15, 18, and 19, 21, 22, 26, and 31 under
separate headings. See Br. 23–28. We are unpersuaded of error in the
Examiner’s rejections of these claims for the reasons stated by the Examiner
(Ans. 25–30), which Appellants do not persuasively rebut.
Appellants argue claims 25, 32, and 33 with claim 1. See Br. 16–19.
Appellants do not separately argue claims 2–9, 11, 12, 14, 16, 20, 23, and
27–30. Id. Appellants do not argue the Examiner’s rejection of claim 17.
In view of the foregoing, we sustain the Examiner’s obviousness
rejections of all pending claims.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1–9, 11–23, and 25–33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED